Prior art is analogous (and thus available to be combined in a 103 rejection) if it is from the same field of endeavor, or reasonably pertinent to the problem addressed by the invention. We have discussed this two-prong test in various posts (e.g., here, here). While applicants often feel that examiner’s are too willing to apply references that should not qualify, many patent examiners are unconvinced by an argument that relies solely on a prior art reference being non-analogous. However, applicants can be successful with such arguments in the right circumstances, even before the PTAB.

As to the first prong of the test, the fight is often over how broadly to define the field. The examiner will argue for a broad field, and the applicant will try to narrow that down. Similarly, as to the second prong, the fight often turns on the definition, and scope, of the problem to be solved. The examiner will try to define the problem and its scope to match whatever is set forth in the prior art reference.

So, what are some approach for forming an effective argument in order to convince the Office that the applied prior art reference is non-analogous, and thus the rejection is improper?

An example that illustrates an effective approach is Appeal 2021-003606, Application 15/285,875. The invention relates to a produce (such as lettuce) wash system comprising a produce line including a short-term wash device followed by a wash device. The short-term wash device applies a short-term wash treatment to the produce using a spray device that creates micrometer-sized droplets, wherein the short-term wash treatment remains on the produce for a pretreatment time that lasts until the produce reaches the wash device. The wash device applies a wash treatment to the produce, where the wash treatment rinses the short-term wash treatment from the produce defining the end of the pretreatment time. The pretreatment time is set at or below a damage threshold time beyond which the short-term wash treatment damages the produce beyond a damage threshold.

Claim 1 on appeal is set forth below.

1. A produce wash system comprising:
a short-term wash treatment solution;
a short-term wash device comprising a spray device configured to apply the short-term wash treatment solution to a produce product, wherein the spray device is configured to create a volume median diameter (VMD) of spray droplets between 2 micrometers and 40 micrometers;
a wash treatment; and
a wash device downstream of the short-term wash device to define a produce line and configured to apply the wash treatment to the produce product, wherein the short-term wash treatment solution is configured to be applied for a shorter duration and is chemically different from the wash treatment.

The examiner rejected the claim based on a combination of reference, one of which being Ohta (which the applicant argued was non-analogous). In particular, Ohta described a method of preserving the freshness of a harvest crop (by using a misting system for misting fluid droplets of a size smaller in diameter than the produce’s pores, preferably less than 10 μm, to permit the fluid to enter the pores), as opposed to processing/washing the produce.

The Examiner maintained the rejection arguing that because both Ohta and the claimed invention relate to handling of produce crops, they are within the same field of endeavor. The examiner further asserted that Ohta and the claimed invention are classified in the same section and class, i.e., A23 covering “Foods and Foodstuffs; Their Treatment, Not Covered by Other Classes.” Finally, in attempting to distinguish the present case from In re Clay, 966 F.2d 646, 659 (Fed. Cir. 1992), the Examiner reiterates the determination that Ohta and the claimed invention are in the same field of endeavor because, unlike Clay, the field of endeavor here, i.e., processing of raw, fresh produce, “is not so large.” Thus, the examiner took the typical approach of broadly defining the field so as to encompass both the prior art and the claimed invention.

The applicant was forced to appeal. The applicant illustrated three classic ways to attack an overly-broad definition of the field:

1. show that the examiner’s broad field is actually more akin to defining the “industry”. And, per in re Clay, merely having a common industry is not sufficient to show the same field;

2. hone in on the classifications and illustrate the differences or shortcomings in the classifications;

3. illustrate how the examiner’s proposed scope of the pertinent field includes many things which having nothing to do wither either the cited reference or the invention.

The PTAB agreed with the applicant:

The Examiner describes the field of endeavor of Appellant as the handling or processing of produce crops. We find this field of endeavor description to be unreasonably broad, in that it encompasses virtually any process of handling or processing produce, including harvesting and harvestors, grading and segregating, produce cutting, pitting, and chopping, produce packaging, hydrating and preserving, and, of course, washing and sanitizing. Merely demonstrating that references share common patent classification is insufficient to establish that the references are analogous prior art to a claimed invention, particularly where, as here, the common classifications are in a catchall, “Not Covered by Other Classes.”

As discussed above, both Mitchell and Appellant are directed to the washing of produce crops. A more reasonable statement of Appellant’s field of endeavor, therefore, is the field of washing and sanitizing harvested produce. Ohta’s field of endeavor, on the other hand, is more reasonably stated as the field of preserving produce freshness, especially for use in retail transport, storage and displays. As such, we are persuaded that the Examiner erred in finding that Ohta shares the same field of endeavor as Appellant.

Good luck with your non-analogous art arguments in the future - perhaps these strategies will help frame the issues in a convincing way.